Designs need protecting!

If this is your first experience of design protection, allow us to guide you through.

Whether you're a company or an individual designer, these are some of the issues you'll need to consider when you embark on protecting your first design.  Please give them some thought before you contact us; the answers will help us to give you the best possible advice.

Is design protection right for you?

Design protection covers the way something looks, not how it works.  So in the product you want to protect, is it appearance that's important, or function, or both?  You may need patent protection instead of or as well as design rights.

Consider these questions too.  Are your customers genuinely interested in the appearance of your product as opposed to its function?  How long a lifetime will your product have?  Are you likely to sell several products all with similar, yet slightly different, designs?  Do you have lots of competitors in this field?  Would it be easy for them to design a similar product to yours but with a different appearance?  Do they take the law seriously, or are you troubled by pirate copies?  The answers to these questions will help us to assess (a) whether design protection is the right option for you, (b) if it is, whether you should register your design or rely on the cheaper, automatic unregistered rights that are available and (c) what form to protect your design in.

Also – is now the right time to protect your design, or is it likely to develop in the near future?

Is your design protectable?

Is it different enough to the designs – whether yours or other people's – that are already around?  What's the closest similar design you're aware of, and how does yours differ from that?  Will customers notice that difference?

How did you come up with the design?  Were there any constraints on it (eg, because of the product's function, or because it has to fit with some other product)?

The answers to these questions will determine whether your design can be legally protected and if so in what form.

Have you made the design public?

In Europe and the USA, you can only protect a design within the first 12 months of making it public.  In some countries, you must apply for protection before you go public.  Let us know whether and how you've used your design so far – have you shown it to anyone, have you sold or advertised the product, is it displayed on the web?  Also let us know which countries you need to protect it in, and we can advise what needs to be done.

Ideally, keep your design confidential until you've sought advice about protecting it.  If you need to discuss it with someone in confidence, for instance if they're helping you to manufacture or market it, we recommend you use a written confidentiality agreement – see the panel on the right.

What form should you protect it in?

We can advise on this, but we'll need to know things like: are any parts of the design dictated by the product's function?  Are any parts of it known from elsewhere, or even standard in the trade?  Also tell us any ways you might want to alter your design over the next few years.  Is its colour likely to change, or its proportions?  What might your competitors alter if they wanted to copy your design?

Also let us know all the different products you might want to apply the design to.

Who owns the design?

Do you own the design or did somebody else produce it for you, or alternatively did you produce it for somebody else?  It's important that you own all the rights in the design, including any associated copyright – we can advise on whether this is the case.  Also think about who you want to own any eventual design registration – you as an individual, or a company perhaps?  Think about who will be paying for the registration and who will need to exploit it.  It's possible to have two or more co-owners if you want.

If you're a company, was the design created by an employee?  Or by an external consultant?  Was it made in collaboration with another company?  And if you're part of a group of companies, which member of the group owns the design?  - Again we can advise on all these issues.

Are you free to use it?

Even if you get your own protection for a design, you can still infringe someone else's rights by using it.  We can advise on this type of situation.  Let us know if you're aware of any similar looking competitor products – they should be checked out before you go to market.  You should never copy other people's designs; ideally you should not even use them as a starting point.

How will you exploit your design rights?

How do you plan to make money out of your design?  Will you license others to use it for a royalty, will you sell your design rights to someone else, will you market the product yourself (or perhaps through a distributor) and use your design rights to protect your position in the market?  Let us know so that we can shape your protection more effectively.

Where do you want to protect the design?

Which countries do you plan to market your product in?  Where do your competitors operate?  Each country needs its own design protection, especially those where you'll have licensees or distributors, or where you know of a major competitor.  Will your product differ between countries?  Will you exploit it differently in some areas?

We can advise on the best strategy for protecting a design internationally.  Generally, we would start by applying for a UK or European Community design registration and up to 6 months later we could apply for protection in other countries of interest.

Obtaining registrations in several countries will cost a lot more than just in the UK.  Think about how you'll fund this, and again how you'll exploit your design in each country.  Note too that infringement risks should be checked out for each country you plan to work in.

When you meet us...

…Anything you tell us will be kept strictly confidential, even if you don't continue with a design application or you go to another patent attorney instead.

When you visit us for the first time, please bring some form of ID and proof of address (eg, your driving licence or a recent utility bill).

For new clients we usually ask for payment in advance for at least part of our charges.  You can read our business terms here – please check you're happy with them before you visit.